Issue 54 | March 3, 2003
USPTO Posts Priority Claim Procedure Notice
 The United States Patent and Trademark Office recently posted an informal Notice regarding how claims for the benefit of priority under 35 U.S.C. §§ 119(e), 120, 121 and 365(c) must be presented in applications in order to be in compliance with the relevant statute and patent regulations.

According to the Notice, U.S. patent applications are currently being improperly submitted or amended with a statement at the beginning of the specification followed by a listing of nonprovisional and/or provisional applications, but without:
  1. the specific relationship between the nonprovisional applications (i.e., continuation, divisional or continuation-in-part); and/or
  2. an identification of each nonprovisional application which is directly claiming priority to a provisional application.
Benefit claims under 35 U.S.C. § 120, 121 or 365(c) that do not identify a prior application and also specify a relationship between each of the applications will not be recognized by the Office and will not be included on the filing receipt for the application, even if the claim appears in the first sentence of the specification. Similarly, if a benefit claim to a provisional application is submitted without an indication that an intermediate nonprovisional application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the twelve month period, or the relationship between nonprovisional applications is not indicated, the Office will not recognize such a benefit claim, and will not include the benefit claim on the filing receipt

The Notice provides several examples of acceptable benefit claims:
"This application is a continuation of Application No. C, filed ---, which is a continuation of Application No. B, filed ---, which claims the benefit of U.S. Provisional Application No. A, filed ---."
Where the benefit of more than one provisional application is being claimed, the intermediate nonprovisional application(s) claiming the benefit of each provisional application must be clearly indicated. For example,
"This application is continuation of Application No. D, filed ---, which is a continuation-in-part of Application No. C, filed ---, Application No. D claims the benefit of U.S. Provisional Application No. B, filed ---, and Application No. C claims the benefit of U.S. Provisional Application No. A, filed ---."
An example of a proper benefit claim of a prior national stage of an international application, which claims the priority to a provisional application, is
"This application is a continuation of U.S. Application No. Y, which is the National Stage of International Application No. PCT/US--/---, filed ---, which claims the benefit under 35 U.S.C. § 119(e) of U.S. Provisional Application X, filed ---."
Other examples of proper benefit claims are available in MPEP Section 201.11.

Without this information, the USPTO is unable to enter the benefit claim into it's computer database and the claim will not be recognized. Nonetheless, the Office plans to notify applicants on, or with, the filing receipt that a benefit claim may not have been recognized because it did not include the proper reference. According to the Notice, the filing receipt and the notification will usually be provided to the applicant shortly after the filing of the application, so that applicants should have sufficient opportunity to submit the proper benefit claims within the time period set in 37 CFR 1.78(a)(2)(ii) and thus avoid the need to submit a petition under 37 CFR 1.78(a) and the surcharge fee set forth in 37 CFR 1.17(t). However, failure to timely submit the reference required by 37 CFR 1.78(a) will be considered a waiver of any benefit claim under 35 U.S.C. § 119(e), 120, 121 or 365(c) unless an appropriate petition is filed.

When entering benefit claims for an application into the Office’s database, the relationship between the nonprovisional applications (i.e., continuation, divisional, or continuation-in-part) is required. The system will also not accept any benefit claim to a provisional application where the provisional application was filed more than twelve months prior to the filing date of the subject application, unless the applicant also clearly identifies, and claims the benefit of, a prior nonprovisional application that was filed within twelve months of the filing date of the provisional application. Therefore, when benefit claims are presented without all of the necessary information, the Office will not be unable to enter such benefit claims into the Office’s database, the filing receipt will not reflect the prior application(s), and the projected publication date will not be calculated as a function of an earlier application’s filing date.

The specific relationships between each of the nonprovisional applications in a chain of nonprovisional applications are also important for inclusion on the tile page of the patent and any published application. For example, while the designation of an application as a continuation is an indication that the entire invention claimed in an application has support in the prior application, the designation of an application as a continuation-in-part is an indication that the claimed invention is not entirely supported by the prior application. The identification of the specific relationship between nonprovisional applications in a chain of benefit claims, and the indication of the specific nonprovisional application that are directly claiming the benefit of a provisional application, will therefore provide the information that is needed by examiners and the public in order to determine the effective prior art date of the application publication, or patent, under 35 U.S.C. § 102(e). Similarly, when benefit claims to provisional applications are incomplete, the Office may be unable to publish an application promptly after the expiration of a period of eighteen months from the earliest filing date for which a benefit is sought.

The Office views its objection, correction by applicant, and the review and entry of changes by the Office for non-compliant benefit claims as a burden on both applicants and the Office that can be avoided if such benefit claims are properly submitted the first time. The Office hopes that applicants will submit benefit claims with all the required information as set forth in the notice and, correspondingly, avoid submitting non-compliant benefit claims that lead to extra work for both the Office and applicants.

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.